Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Thursday, 31 October 2013

Are these the offices of The Trademark Office Ltd? This image comes from its website

When Kats get busy, they are only too pleased when their readers come to their aid -- and when Kiera Dale (a solicitor with TLT LLP) contacted us with news of an adjudication against one of those beastly scammers, a very official sounding business calling itself The Trademark Office Limited, it was with unfeigned pleasure that we discovered that Kiera was willing to have a go at writing this news up as a blogpost. This Kat thinks she has done pretty well. Don't you? Writes Kiera:

We are all
well aware of the numerous scams by various organisations with seemingly
official names and logos, such as OHMI Office for International Registration
Trademarks and Designs and Community Trade Mark and Designs Limited, among
others, that write to unsuspecting trade mark owners offering their trade mark
and design renewal services under the guise of a reminder or invoice (see
recent IPKat update, here). These
activities and the perpetrators can be reported to the UK Intellectual Property Office (IPO) and the Office for Harmonisation in the Internal Market (OHIM) and are included on their various warning lists. The IPO has also confirmed previously
that it was taking legal advice and had discussed these issues with Trading
Standards but generally, other than issuing periodic warning notices to trade
mark owners, we have seen little evidence of progress in preventing these scams
(although if anyone has any further information regarding this, please do let
us know…)

However, a
recent case reminds us that we are also able to report the invoices and letters
sent by these organisations to the Advertising Standards Authority (ASA) for
breaching the Committee of Advertising Practice (CAP) Code which lays down
rules which advertisers must follow.

This most
recent ASA Adjudication decision on the matter was handed down on 16 October
2013 (see update on the ASA website here). The direct mailing
advertisements sent out by The Trademark Office Limited were held to be
misleading as they implied that the mailings were official correspondence from
an organisation with an affiliation to the Intellectual Property Office rather
than being unsolicited mailings sent out by a private company. The ASA ordered The
Trademark Office Limited not to issue the mailings in the same form again and
also required it to amend the layout of future mailings to ensure they did not
imply it was official correspondence or that it was affiliated to the IPO.

It is fairly
easy to make a complaint (you don’t need to be a consumer to do
so). The ASA has a good
track record of investigating the vast majority of complaints made to it, so it
is worth considering if you/your clients are frustrated by the scammers. Of
course the more reports made to the ASA, the better the chances are of keeping
the number of scams low...

Was it only yesterday that this Kat commentedon the misfortunes that befall the members of old rock groups, in the context of ex-Animals front man Eric Burdon fending off his old drummer's attempt to register "The Animals" as a UK trade mark? Well, another day -- another group: this time it's Wishbone Ash and the dispute goes by the name of Powell v Turner [2013] EWHC 3242 (IPEC), an Intellectual Property Enterprise Court decision of Mr Recorder Douglas Campbell, sitting as an Enterprise Judge on 24 October.

Andy Powell had, since 1969, been a member of a large number of different band line-ups, each of which had traded as 'Wishbone Ash'. Martin Turner had been a member of some of those line-ups, including those which spanned the band's most successful period (1969 to 1981). Beyond those golden days, Powell continued to play in a band of that name, whereas Turner played in a band called 'Martin Turner's Wishbone Ash'. As luck would have it, Powell was since March 2000 the sole registered proprietor of Community Trade Mark (CTM) No 742684, consisting of the words 'WISHBONE ASH', which he had applied for on 9 February 1998 for goods and services in Classes 9, 16, 25 and 41. Armed with this registered right, he brought proceedings in which he sought relief for, among other things, infringement of the trade mark in respect of

(i) Turner's use of 'Martin Turner's Wishbone Ash' as the name of his band, which provided live and recorded musical performances, and

Turner counterclaimed for revocation of Powell's CTM trade mark on the ground that it was applied for in bad faith contrary to Article 52(1)(b) of Council Regulation 207/2009 . He also sought an account of a share of the profits made by Powell in the six years leading up to the date of service of the counterclaim, to the extent that such profit was attributable to Powell's use of Turner's share of the goodwill attaching to the Wishbone Ash name generated by the first Wishbone Ash, or to interest at 5% per annum on such share following its valuation.

Mr Recorder Campbell plumped for Powell. In his view:

* There was no evidence to support the assertion that Powell's application was made in bad faith. On the facts, he was the sole owner of the goodwill in the name Wishbone Ash on the date he applied to register it.

* Neither 'Martin Turner's Wishbone Ash' nor the domain name www.wishboneash.co.ukwere identical to the trade mark as registered.They were however similar, which then raised the questions whether there was any likelihood of confusion -- whether there had been any actual confusion or not -- and whether there had been a taking of an unfair advantage of the reputation in the name Wishbone Ash without due cause.

* The use of 'Martin Turner's Wishbone Ash' involved a clear likelihood of confusion with the registered mark, especially since that sign was not just similar but highly similar to the mark as registered. Turner had also used the name Martin Turner's Wishbone Ash and the domain name without due cause. There was no reason why the use of the domain name as part of web pages dealing with the band's historical background should cause any type of injury to Powell's CTM -- but use of the name for marketing Turner's band was a very different issue.

* The use of the domain name in the course of normal advertising also infringed Powell's CTM.

* There was no basis for ordering an account of profits in Turner's favour or for holding Powell's CTM to be invalid.

Once again, there were no legal terrors in this case: it was just another sad situation in which there wasn't quite enough talent or goodwill to go around, leaving one aged rock musician grasping at straws. But where were the lawyers when the group's legal and commercial parameters were being forged?

Following earlierposton draft "innovation
exception" proposed in theIrish Review Committee Report released on 29 October 2013, it is now
the turn of examining the proposed provisions on linking and marshalling.

As IPKat readers know, whether linking
falls within the scope of copyright protection (is it a communication to the
public?) is currently an extremely heated issue.

Almost in parallel to this, a few
months ago Germany adopted the controversial Leistungsschutzrecht
für Presseverlege (‘LSR’, that entered into force on 1 August
2013), known in jargon asLex Google (here,here). The newly created sections87f,
87g and 87hof the Urheberrechtsgesetz
(the German Copyright Act) provide for the exclusive (neighbouring) right of press publishers
to exploit their content commercially for one year, thus preventing search
engines and news aggregators from displaying excerpts from newspaper articles
without paying a fee. Shortly prior to its approval, the text of the bill
was amended to the effect that — contrary to the original proposal — no fees
will have to be paid for displaying single words or short-text snippets.
However, the text of the LSR does not clarify the length required to fall
within this exemption.

So, amidst all these discussions, what has the
Irish Report to say in respect of linking and snippets?

"Interconnectedness by linking is at the very heart of the
internet, so we recommend that linking should not infringe copyright, except
where the provider of the link knew or ought to have been aware[at the time he/she provided the
link]that it connects with an infringing copy[unless the provision of the link
is in the public interest, eg a news site that wishes to expose sites that
stream pirated content]. We further recommend that it should not be an
infringement of copyright to reproduce a very small snippet of the linked work
reasonably adjacent to the link, and that a very small snippet should consist
of no more than either 160 characters or 2.5% of the work, subject to a cap of
40 words".

Li(c)king: should it be an exception?

Linking

Starting with linking, this would be
basically permitted as an exception to copyright, rather than something thatper sedoes not fall within the scope of
copyright protection. This conclusion appears supported by both use of the word
'exception' in some parts of the Report and the fact that - among other things
- linking would be subject to new Section 87A to be inserted in the Chapter of the Irish
Copyright Act dealing with exceptions.

DISCLAIMER: this Kat personally agrees
with the position of the European Copyright Society that linking should fall
outside the scope of copyright protection tout court. This said, how easy would be to
demonstrate in practice that "the provider of the link knew or
ought to have been aware that it connects with an infringing copy"?

Snippets

Turning to the issue of snippets, the
Report deals with them in the broader context of marshalling, ie a "neutral word ... to cover
activities such as the indexing, syndication, aggregation, and curation of
online content ... Effectively, marshalling is a development of linking, at
least in as much as the marshalled text provides a content for the linked work."

The Irish Report considers that "[h]aving regard both to the locus of much
online innovation, and to recent developments in Germany ... it would be a
retrograde step not to make some provision for marshalling."

Hence, it recommends adopting "a
very narrow marshalling exception, modelled on the German provision, but with
more definitions and safeguards", to be included in proposed new
Section 87A:

(3) To provide
appropriate context for a link ..., it is not an infringement of the rights
conferred by this Part to reproduce reasonably adjacent to the link a very
small snippet of the linked work; provided that such reproduction does not
conflict with a normal exploitation of the work and does not unreasonably
prejudice the legitimate interests of the author.

(4) It
shall be a matter of fact and degree in any given case as to whether the
criteria in subsection (3) are satisfied.

(5) Without
prejudice to subsection (4), where the work being reproduced is a literary
work, then an extract which is

(a) no more than one hundred and sixty characters, and

(b) no more than forty words

Did you say marshalling or marshmallow?

shall constitute a very small snippet for the purposes of
subsection (3).(6) Without prejudice to subsection (4), where the work being
reproduced is a literary work, then an extract which is

(a) no more than two and half per cent of the total number of

words in the work, and

(b) no more than forty words

shall constitute a very small snippet for the purposes of
subsection (3).

With such detailed guidelines for literary works [by the way: where do those quotas and percentages come from? Does any reader know?] it appears difficult to say that whether a
snippet infringes copyright is "a
matter of fact and degree". In addition, one may wonder whether these "numbers" would resist technological change or have to be updated frequently instead.

Furthermore this provision leaves
unresolved the issue of framing. It is questionable whether framed images from
website operators that are visible on search engines might be considered as
"verysmall" snippets [this concept has been inspired by the German LSR]. Since the Report
suggests addressing marshalling as an exception to copyright, rather than
something not generally subject to copyright, this is not an irrelevant
question. In fact, can it be said that “small”
snippets may infringe copyright? If so, can ISPs be held liable for displaying small snippets and
framed images (note that the Report rejects the very idea of having a specific framing immunity for ISPs)?

"Aww ... There is nothing like the smell of copyright reform",thought dreamy Bruce

"Copyright reform is in
the air." These are the inspired and inspiring opening words of the exciting Reportreleased
on 29 October 2013 by the Irish Review Committee and entitled Modernising
Copyright (here).

The Review Committee was given
the following Terms of Reference:

1.Examine the present
national copyright legislation and identify any areas that are perceived to
create barriers to innovation.

2.Identify solutions
for removing these barriers and make recommendations as to how these solutions
might be implemented through changes to national legislation.

3.Examine the US style
‘fair use’ doctrine to see if it would be appropriate in an Irish/EU
context.

4.If it transpires that
national copyright legislation requires to be amended but cannot be amended
(bearing in mind that Irish copyright legislation is bound by the European
Communities Directives on copyright and related rights and other international
obligations), make recommendations for changes to the EU Directives that will
eliminate the barriers to innovation and optimise the balance between
protecting creativity and promoting and facilitating innovation.

Besides recommendations
concerning the creation of a Copyright Council of Ireland and specialist IP
courts, the Report deals with issues that are particularly close to the heart
and mind of this Kat, including orphan works, the originality requirement and
copyright exceptions. With regard to the latter, the Report
advocates the introduction of "tightly-drawn exceptions for innovation,
fair use, and very small snippets of text in the context of online links",
alongside implementation of the full range of exceptions allowed under the
InfoSoc Directive, including "format-shifting, parody, education,
disability and heritage, as well as related exception for non-commercial
user-generated content[but where is this to be found in the
Directive?]and content mining".

As IPKat readers will promptly
reckon, this Report is a gold mine of ideas for reforming copyright, not just
in the Emerald Island.

This is why this Kat has decided
to select some of the issues dealt with therein and run a Modernising
(Irish) Copyright Katseries, starting with the intriguing "innovation
exception", which is intended to allow specifically transformative use(s) [under US law, this is part of the broader fair use doctrine: see recent examples here and here]

The "innovation
exception"

One of the Terms of Reference was
to see how innovation could be incentivised. The Report holds the view that,
since the InfoSoc Directive did not harmonise the adaptation right, EU law does
not prevent EU Member States from adopting their own innovation exceptions.
Therefore, subject to the three-step-test (as codified - among other things -
inArticle9(2)of the Berne
Convention and Article 5(5) of the InfoSoc Directive), the Report suggests that

"it would not be an infringement of copyright
if the owner or lawful user of a work ... derives from it an innovative work,
where the latter is an original work which either substantially differs from,
or substantially transforms, the initial work."

Despite the slight presence of
more detractors than supporters at the stage of public consultation, it is
proposed that the following "tightly-drafted and balanced exception for
innovation" is introduced into Irish copyright law:

The typical barrier to innovation

106E. Innovation.

(1) It is not an infringement of the rights conferred
by this Part if the owner or lawful user of a work (the initial work) derives
from it an innovative work.

(2) An innovative work is an original work which is
substantially different from the initial work, or which is a substantial
transformation of the initial work.

(3) The innovative work must not—

(a) conflict with the normal exploitation of the
initial work, or

(b) unreasonably prejudice the legitimate interests of
the owner of the rights in the initial work.

(4) Unless it is unreasonable or impractical to do so

(a) the innovative work must be accompanied by a
sufficient acknowledgement, and

(b) within a reasonable time of the date on which the
innovative work is first made available to the public in the State, the author
of the innovative work must inform the owner of the rights in the initial work
about the availability of the innovative work.

(5) Subsection (1) shall not apply if—

(a) the initial work is an infringing copy, and

(b) the person making the innovative work did not have
reasonable grounds to believe that the initial work was not an infringing copy.

(6) Subsection (1) shall not apply if, or to the
extent that, the owner of the rights in the initial work can establish by clear
and convincing evidence that, within a reasonable time after first publication
of the work, he or she had embarked upon a process to derive from it a work to
which the innovative work is substantially similar.

(7) This section shall come into operation on such day
as may be fixed by order made by the Minister.

When reading this draft
exception, the immediate thoughts of this Kat went to pending CJEU reference
(also acknowledged in the Report) inCaseC-419/13Art & Allposters
International(here), a request for a
preliminary ruling concerning the right of distribution, its exhaustion and
transformative use. Overall, it would appear premature to say that the InfoSoc
Directive leaves carte blanche to
Member States to introduce their own "innovation exceptions", also because - among other things - the InfoSoc Directive does not really provide a specific UGC exception.

While finding the proposed exception a good idea, there might be other problems with current drafting.

Firstly, as also noted in
some responses to the public consultation, one may wonder whether speaking of 'substantiality' in relation to reproduction is a smart move these days,
especially following the Infopaqstring of cases. As also (or should one say 'even'?) recalled by Proudman J in theMeltwaterdecision,Article 2 of the InfoSoc Directive contains no reference to ‘substantial
part’. According to the English judge, in theInfopaqdecision the CJEU
clarified that “originality rather than substantiality is the test to be
applied to the part extracted. As a matter of principle this is now the only
real test”.

Possibly the most useful transformation ever

Secondly, the three-step-test.
Where is reference to 'special cases' in the proposed draft exception? Can a general transformative use exception be considered a special case?

Thirdly, something which is
probably symptomatic of this Kat's continental copyright legacy:
moral rights, in particular the right of integrity. Section 109(1) of the Irish
Copyright Act provides for the waivable but non-assignable or alienable right
ofthe author
"to object to any distortion,
mutilation or other modification of, or other derogatory action in relation to,
the work which would prejudice his or her reputation and that right shall also
apply in relation to an adaptation of the work." Should Ireland decide to adopt its own innovation exception, then also Section 110 of the Act ('Exceptions to integrity right') should be amended accordingly.

***

What do readers
think of the proposed Irish innovation exception? Would they welcome consideration
also by other Member States or the EU itself when revising the InfoSoc
Directive?

Wednesday, 30 October 2013

The excellent and ever-thoughtful Dan Bereskin QC (Bereskin Parr) has been the source of many an interesting insight from which this Kat has benefited over the years, so his emails are always welcome and eagerly devoured. Today's epistle was no exception, Dan having unearthed a somewhat unorthodox approach to the normally accepted view that specialist tribunals do better than random ones when it comes to hosting the sort of detailed specialist litigation which characterises patent suits. Writes Dan:

"Under a 1982 Act of Congress called the Federal Courts Improvement Act, the United States Federal Circuit was granted exclusive jurisdiction over patent appeals. The motive was to reduce the lack of uniformity and uncertainty of legal doctrine in relation to the administration of patent law. Uniformity is a coveted goal in many areas of the law, but what if the result is uniformly bad? In "Is It Time to Abolish the Federal Circuit’s Exclusive Jurisdiction in Patent Cases?", an insightful, carefully nuanced, and at times funny critique of the current system, Hon. Diane P. Wood (right), Chief Judge of the U.S. Court of Appeals for the 7th Circuit, argues that the Federal Circuit should no longer have exclusive jurisdiction over patent appeals. Instead, appellants should be able to choose between review in the Federal Circuit or in the regional circuit with jurisdiction over the district court from which the claim first was filed.

Her critique is said to rely on “three of the leading legal thinkers of our times: the Dixie Chicks (left), Robin Thicke, and Burt Bacharach.” From the Dixie Chicks’ song “Wide Open Spaces” we learn that by providing “wide open spaces” to the adjudication of patent cases, new ideas would be encouraged to “percolate and grow”. Also from the same song, “She . . . needs room to make her big mistakes”. Judge Wood argues that “mistakes teach valuable lessons”, that “a proposition that seems obvious to one person might seem questionable to another, ambiguous to a third, and flatly wrong to a fourth.”

If on occasion mistakes are made, we can learn from them, and make the necessary repairs. This surely is better than perpetuating the same mistakes as a specialized court may be more likely to do, as evidenced perhaps by the current low standard of non-obviousness which has been said to impose “a heavy tax on invention and discourag[ing] entry into innovative enterprises” (citing Rochelle Cooper Dreyfuss, "In Search of Institutional
Identity: The Federal Circuit Comes of Age", 23 BERKELEY TECH. L.J. 787, 796 (2008), quoting Rochelle Cooper Dreyfuss, "The Federal Circuit: A Case Study in Specialized
Courts", 64 N.Y.U. L. REV. 1, 5 (1989)).

Judge Wood makes a powerful argument for allowing regional circuits to rule on patent appeals: her remarks are well worth careful consideration".

Judge Wood’s speech was delivered as the keynote address at IIT Chicago-Kent College of Law on 26 September 2013 and can be downloaded in its entirety here.

Originality in EU Copyright: Full Harmonization through Case Law is a book which this Kat can honestly say he has read from cover to cover, since it is based on the author's PhD thesis which it was his privilege to examine. The author, Eleonora Rosati, is of course a fellow Kat, which means that any attempt to write about this book in an objective, dispassionate manner, was doomed from the outset. We all think the world of Eleonora, who is great fun to work with -- perceptive, funny and possessed of a powerful analytical capability.This Kat's friends at Edward Elgar Publishing have done a handsome job in turning Eleonora's thesis into a pleasant and comfortably readable book, about which they have this to say:

"Full harmonisation of the copyright laws of EU member states has long been a holy grail for copyright lawyers but, with the reality thus far being only limited harmonisation resulting from ad-hoc legislative interventions, there are serious questions over the feasibility and indeed desirability of this goal. Notwithstanding, as this book makes eloquently clear, whilst legislative initiatives have been limited, the CJEU [Court of Justice of the European Union] has been acting proactively, establishing through its decisional practice the de facto harmonization of an important principle of copyright: the originality requirement.

Through an assessment of the originality requirement, this work guides the reader in interpreting judicial decisions which are of fundamental importance to current and future understanding of EU copyright. The book’s holistic approach and methodology takes in analysis of; recent decisions of the CJEU in light of broader EU copyright reform debate; the implications of CJEU case law in Member States which have traditionally adopted different approaches to copyright (eg the UK); the originality requirement in EU, UK and continental Member States; recent UK decisions from an EU perspective; and academic copyright reform projects, both in Europe and the US".

If nothing else, this book should be compulsory reading for the judges belonging to the CJEU, so that they can see what they've done. It will also be compulsive reading for lovers of certain basic copyright concepts and who want to know what "originality" really means.Bibliographical data: Hardback, xxviii + 272 pages. ISBN 978 1 78254 893 5; ebook ISBN 978 1 78254 894 2. Price: Hardback £80 (online, £72 from the publishers). Book's web page here. From now till the end of the calendar year, IPKat readers are entitled to a 35% reduction quoting the discount code ROSA35. Eleonora is also running a competition till 4 November, for which the prize is a free copy: details here.

Back in August 2011, the following small item appeared as part of one of the IPKat's Monday Miscellany posts:

Patents and the Public Domain. Some readers may recall that, earlier this year, IPKat team blogger Jeremy was preoccupied with the interaction of the patent system with the public domain. This was because he was preparing a study for his friends at the World Intellectual Property Organization (WIPO) on that very subject. This paper has now been published on the WIPO website as document number CDIP/4/3/REV./STUDY/INF/2 [he had been hoping for a more exciting document number, but this was the only available at the time] on the bit of the website that's called "Projects for Implementation of Development Agenda Recommendations". The document itself is called Study on Patents and the Public Domain and you can read it here. It's not all written by this Kat, incidentally: it also contains scholarly contributions from India, Colombia, Egypt, Ukraine and South Africa. If you get a chance to read it, please let the IPKat know what you think!

Curiously enough, there's a sequel to this. A new document, "Study on Patents and the Public Domain (II)" has been prepared for WIPO by James G. Conley (Clinical Professor of Technology, Kellogg Center for Research in Technology and Innovation, Kellogg School of Management, Northwestern University), Peter M. Bican (Doctoral Candidate, Chair of Technology and Innovation Management, WHU – Otto Beisheim School of Management) and none other than Jeremy's fellow Kat Neil Wilkof. You can access and read this study as a docx file (here) or as a pdf file (here). Which Kat will be invited to write the next WIPO paper on the subject, wonders Merpel ...

Around the weblogs. Writing on Class 46, Gino van Roeyen chronicles the misfortunes of both parties in a monumental scrap between owners of Benelux trade mark registrations for POPSTARS and POPSTARS -- THE RIVALS. On PatLit, guest blogger Suleman Ali asks if we're too afraid to rethink the patent system. Meanwhile, IP Finance reports on the UK IPO's latest support for IP-based businesses, which appears to consist mainly of new apps. Art & Artifice notes the publication of a lovely new book, Freedom of Artistic Expression: Essays on Culture and Legal Censure, by Paul Kearns.

Courses for trade mark attorneys: plenty of CPDs. On 10 December our friends in the Institute of Trade Mark Attorneys tuck into what, for many of them, is likely to be the first of many Christmas lunches; no doubt it will be comprised of several courses. This feast, redolent with CPDs (Christmas Pudding Desserts), takes place in the luxurious surroundings of the Intercontinental Park Lane, London. Prices are being held at last year's rates and there's only room for 600 -- so you'd better get a move on if you're thinking of attending! Registration details arehere.

Victor vanquished. Olesegun Victor Ibitoye v Hasbro Inc,Case O-382-13 is the second appeal from the UK's Trade Mark Registry to an Appointed Person to get a mention on this weblog today. While this appeal was made to Katfriend Daniel Alexander QC, in contrast with The Animals case, which was heard by Geoffrey Hobbs QC, the two cases share an unusual feature: in each of them the appellant's middle name is Victor.

In this case Ibitoye applied to register the word GALATOPOLY as a UK trade mark for games and related products. Hasbro opposed, relying on its earlier registered MONOPOLY trade marks for games.According to Ibitoye, the GALATOPOLY mark was to be used for a proposed high-quality game that differed from Monopoly in that it was inspired by and based on the Bible -- in particular on the New Testament book of Galatians, and would be sold in specialist outlets such as Christian bookshops.

Hearing officer David Landau found that there was a very substantial reputation in the MONOPOLY mark for board games and related products. Having taken account of the fact that games and playthings would be bought by children as well as adults and purchased on impulse, so as to increase the impact of imperfect recollection, he held that Ibitoye's GALATOPOLY mark was likely to give rise to a risk of confusion under the Trade Marks Act 1994 s.5(2)(b). More than that, it was likely to dilute or be detrimental to the distinctive character of the MONOPOLY mark under s.5(3) of the same Act.

Ibitoye appealed. In his view David had wrongly evaluated the risk of confusion because of the differences that existed between the first element of the respective marks. In doing so, he pointed to the fact that marks with similar suffixes such as "COCA-COLA" and "PEPSI-COLA" existed without confusion. In any event, he said, the goods in question were not similar because the actual game Monopoly and the game he had devised were different. There was no chance of dilution of the MONOPOLY mark so as to cause damage, since Monopoly already had so very large a reputation and his proposed game would be of high quality.

Last month Daniel Alexander QC dismissed the appeal.

* Assessment of the likelihood of confusion required an abstract consideration of the respective registrations, rather than the actual games as sold, or proposed to be sold, and regardless of any similarity between them.

* There was no error in the hearing officer's assessment of the MONOPOLY mark's reputation; after all, it was self-evident that Monopoly was one of the best-known games in the world. The hearing officer was also right to find that the purchase of games by children, often on impulse, might increase the impact of imperfect recollection.

* The specification for the GALATOPOLY mark covered games in general, with nothing to suggest that its use would be limited to the sale of this game to particular outlets such as Christian bookshops.

* No analogy could be drawn with COCA-COLA and PEPSI-COLA. This was because "COLA" was a descriptive element.

* The hearing officer was perfectly entitled to conclude that the use of GALATOPOLY would be likely to have a detrimental effect on the distinctive character of the MONOPOLY mark in respect of the goods for which it was registered.

No great shocks and horrors here, says the IPKat: any game ending in "opoly" is likely to come to a sticky end, as did EUROPOLY and GLOBOPOLY on previous occasions. If you're wondering about TOTOPOLY, that's owned by Waddingtons, which is owned by ... Hasbro. CAT-OPOLY however appears to be something of an anomaly.

The title of this post suggests that something has gone wrong with the IPKat's normally accurate spelling, but that's not quite the case. The Burdon here is definitely Burdon with an "o" and the Steel is possessed of two "e"s: both are names and their owners were pitched against each other in a case that has been sitting quietly in this Kat's in-box, waiting for something to happen to it. Fortunately it's not an urgent matter: it relates to a trade mark application filed in 2004 and it's the result of an appeal against an official decision dating back to 2008. The case is Eric Victor Burdon v John SteelCase O-369-13 of 9 September, a decision of Katfriend Geoffrey Hobbs QC in his capacity as an Appointed Person.

The appellant. Eric Burdon, may be known to some readers as the lead singer of The Animals pop group back in the 1960s and the rasping vocalist in that group's major hit, The House of the Rising Sun (which, together with Procol Harum's Whiter Shade of Pale, has the distinction of being instantly recognisable by its instrumental intro). He was appealing against the rejection of his opposition to registration by the group's former drummer John Steel to register the words THE ANIMALS as a trade mark for use in relation to CDs and musical recordings in Class 9 and musical live performances in Class 41.

The group, like many in the 1960s, was in legal terms an incorporated association of individuals; no contractual or other arrangements governed the relationship between its members, and there had never been a realisation or division of the group's assets on its dissolution. The original members occasionally reunited to tour or make recordings, their last collaboration being in 1983. In 2001, the group was inducted into Hollywood's RockWalk hall of fame. In a public poll, the group's recording of "The House of the Rising Sun" was voted 14th all-time-favourite single for the purposes of a television programme broadcast in 2001 and 2003. In 2004, John Steel applied to register the words THE ANIMALS as a trade mark. Burdon opposed under the Trade Marks Act 1994 s.5(4)(a) on the basis that, if Steel were to use the mark, Burdon could sue him for passing off.

In 2008 the hearing officer found that the goodwill accrued by the group between 1963 and 1966 had long dissipated [an appropriate word, notes Merpel, given that few groups at that time gave the appearance of being anything like as dissipated as the Animals] by the date of Steel's application, despite the minor top-ups provided by half-hearted reunions, re-releases of the same song, and its induction into a United States museum. He concluded that, since no goodwill existed in the mark in 2004, the ground of opposition under section 5(4)(a) failed. Burdon then appealed, arguing that the hearing office had erred in proceeding on the mistaken basis that no goodwill existed in the mark THE ANIMALS at the date of Steel's application.

Geoffrey Hobbs QC allowed the appeal. In his view:

* The fact that The Animals had stopped producing new materials and performing together did not necessarily mean that there had been a cessation of business capable of sustaining goodwill, still less a destruction of the existing goodwill;

* On the evidence, there was both goodwill and reputation in the name of the group, which accrued to those of its members of the group who last performed together in 1983; it was they who were entitled to control the use of the name THE ANIMALS in relation to live and recorded performances. That goodwill had not devolved or dissipated over the period from 1983 to 2004.

* Steel's use of the name THE ANIMALS was likely to give rise to the mistaken belief that any band performing under that name was the full successor in title to the business of the group originally called by that name. Such misrepresentation was liable to damage the economic value of the goodwill and reputation of the business signified by the name THE ANIMALS. It was thus open to Burdon, as one of the members of the group at its last performance in 1983, to invoke the law of passing off for the protection of the goodwill and reputation to which the group members were collectively entitled.

* The fact that Steel, who also performed with the group in 1983, was one of the "last men standing" did not enable him to lay claim individually to the whole of the benefit of their goodwill and reputation by registering THE ANIMALS as his trade mark.

Says the IPKat, this is just another of those sad cases in which the remnants of a long-dead group are raking over the rubble of their assets in the hope of finding something worth preserving, then wasting their time and effort in trying to stop each other monopolising it. With just a little foresight and a sensible attitude towards managing a group's future and the long tail in its days of decline, this sort of unseemly scrap can be avoided.

Tuesday, 29 October 2013

Via Katfriends Mark Cruickshank and Gill Grassie (from the IP Dispute Resolution Team, Brodies LLP, located somewhere to the North of Hadrian's Wall but South of the Arctic Ocean) comes news of a bonny battle which has so far escaped the attention of other intellectual property blogs:

The Original Green Shack

"An fascinating passing off case came before the Scottish Court of Session at the end of last week when the owner of a local seafood bar and restaurant in Oban known as ‘the Original Green Shack’ (and other variations on this theme) went into battle seeking an interim interdict (injunction) against its rival MacGillivrays Seafood. Obtaining a registered trade mark for a specific colour is not without its challenges, as readers will know. The recent Cadbury v Nestlé battle over the colour purple [noted by the IPKat here] is just one high profile example of the difficulties that can be encountered. But the law of passing off is always there as an additional possible weapon -- and it was this body of law that came into its own in this Scottish case.

The pursuers (claimants) had traded from a green coloured shack or hut on Oban’s Railway Pier for around 25 years or so, selling quality fresh local seafood, and had successfully built up considerable good will in that trading get-up. It used the name ‘Local Shellfish – The Original Green Shack” but was also known by a variety of names such as the Green Shack, and the Green Hut. The claimants argued that they had become widely known under reference to the colour green via websites such as TripAdvisor, in guide books such as Lonely Planet (which praises its prawn sandwiches). A significant source of business for them was the tourist trade. A large proportion of these tourists would be first-time visitors who would be deliberately seeking out the claimants by reference to the green colour of their hut.

When the defender rival set up a seafood bar in a semi-portable unit on the pier, which was also coloured green, the pursuers were concerned about the confusion that was likely to be caused. This was not assisted by its rival’s position as it was closer to the shore: it would therefore be the first of the two businesses that visitors would espy when approaching the pier in search of the Green Shack. Indeed, the pursuers alleged that there had in fact already been considerable confusion and cited instances of this.

MacGillivrays: tried to mussel in ...

The defender’s position was that there was no arguable case of passing off as goodwill in the colour green as such was not established. Indeed, if any goodwill existed it was in a particular shade of bright green which differed from the ‘racing green’ shade that it used. Customers would not be confused as they would be looking for that shade of green. Further, argued the defender, the use of the colour green was a means of describing the pursuers' business as opposed to its actual known get-up. There could be no goodwill in the sense required for passing off to arise in what was a mere description. In addition, its unit was in a different location and was near the station as opposed to near the ferry terminal. It would be easy for the pursuers to specify the whereabouts of their shack to all-comers so that there could be no confusion. Finally, there were other differentiating features used by the defender -- such as its name, MacGillivrays Seafood. The defender challenged the examples of actual confusion which had been put forward by the pursuers and argued that there could in any event be no damage because it also ran a quality seafood business.

Ultimately the IP judge, Lord Pentland, decided after hearing arguments on both sides that there was an arguable case of passing off which was at least a reasonably strong one. Further, making it clear that the balance of convenience was affected by the court’s evaluation of the prima facie strengths of the parties’ respective positions, the judge decided that this balancing exercise favoured the granting of an interim interdict against the defender, who would effectively be forced to repaint his shack a different colour if he wanted to carry on trading.

The case was heard by the court within a matter of a few days of the application being made and took around two hours or so of court time. This is an example of the speed, efficiently and cost-efficacy that is available under the Scottish interim interdict procedure which can lead to a very swift decision and at least some interim certainty for parties who cannot otherwise resolve their dispute"

Monday, 28 October 2013

According to a press release late last week, headed "Corporate Britain out of tune on software theft", this Kat has learned that the third annual whistleblower’s survey by the Federation Against Software Theft (FAST) reveals that two-thirds of persons polled wouldn’t report software piracy in the workplace. This poll, conducted earlier this month, surveyed 200 office workers to gauge their attitudes towards software piracy and whistleblowing. Most, it seems, would be happy to take a lax approach to software theft at the office. Of those that would not blow the whistle, one-third (36 per cent) stated that they wouldn’t report it in order to protect their jobs, 16 per cent to protect their reputations, and a further 30 per cent simply didn’t care. A sizeable minority (14 per cent) cited concerns about negative media coverage about whistleblowers as a reason why they wouldn’t blow the whistle.

This Kat is delighted to hear that the fourth edition of the Taylor Wessing Global Intellectual Property Index (GIPI) will soon be with us. GIPI seeks to provide a comprehensive assessment of how the intellectual property regimes of 36 jurisdictions compare, taking account of more than 14,000 jurisdiction assessments from senior industry figures. The idea is to juggle a bunch of 50 objective factors in order to weigh up the national laws and procedures for patents, trade marks, copyrights, designs and privacy/personal data protection in relation to obtaining, exploiting, enforcing and attacking. This time round, GIPI has included 12 new jurisdictions, including Chile, Saudi Arabia, Switzerland and Thailand. The 4th edition will be launched on 12 November. If you want further details, or just fancy trying to scrounge an early-morning breakfast from Taylor Wessing, email Sarah Le Cheminant at S.LeCheminant@taylorwessing.com.

Long and Kerly.Kerly's Law of Trade Marks and Trade Names has been in print since 1894, which makes it one of the longest-lived titles in the field of intellectual property law. It's now in its 15th edition, which is just in the process of being augmented by its 1st Supplement. Hold your breath: it's going to set you back £125 -- though if you've already paid £350 for 15th edition, you can probably afford it. Authors are James Mellor QC, David Llewelyn, Thomas Moody-Stuart, David Keeling and Iona Berkeley and you can be sure that they've plenty to say about not just UK trade mark law but EU trade mark law too.

Does Paris have a future? This year's Arthur Watts public international law seminar series, sponsored by Volterra Fietta, is throwing up a delicious event for IP enthusiasts: it's a seminar, "The Paris Convention for the Protection of Industrial Property: Past and Present -- but is there a Future?" It's coming up on 4 November in London, with contributions from Katfriends Sam Ricketson, Tanya Aplin and Tomoko Miyamoto (head of WIPO's Patent Law Section), not to mention his very old friend Jill Barrett. Click here for further details and registration.

Passing off and Unfair Competition is the theme of the third event held jointly by the Journal of Intellectual Property Law & Practice and its German cousins at GRUR Int. This exciting programme, scheduled for 23 January 2014, now has 65 registrants -- and the number is rising daily. If you'd like to attend this thought-provoking event, which is free, you can get full details from jiplp, the JIPLP weblog, here.

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